SkyKick UK Ltd v Sky Ltd
13 November 2024
The Supreme Court has today handed down its judgement in relation to the appeal from the Court of Appeal relating to infringement and validity of SKY trade marks.
The judgement unanimously upholds the view of the High Court in finding that Sky had applied for the SKY marks in part in bad faith, because the specifications included goods and services in relation to which Sky had never intended to use the marks and categories of goods and services which were so broad that Sky could not have planned to use the marks across their breadth. Sky had sought very broad protection regardless of whether it was commercially justified. Ultimately, this led to partial invalidation of the SKY marks.
The key issue is whether a registration of a trade mark can be invalidated in whole or in part, on the basis that the application to register was made in bad faith because the applicant did not intend to use the mark for the goods and services for which it sought protection.
The Court of Appeal had been incorrect in reversing the High Court’s decision in relation to bad faith.
The judgement makes it clear that brand owners who acquire trade marks for goods and/or services without the intention of using them and without clear commercial justification will be subject to a finding of bad faith, making it difficult to enforce those rights against third parties.
If you want to discuss your trade mark protection, please contact a member of our Trade Mark team or your usual Withers & Rogers attorney.
Fiona McBride
Trade Mark group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP November 2024
